Request to Revive Israeli Patent for Nonpayment of Renewal Fees is Refused
by Jonathan Agmon
On April 17, 2012 the Administrative IP Judge, Jacqueline Bracha, Deputy of the Patents Registrar, handed down a decision in the application to revive Israeli patent serial number 126,015 which had expired due to nonpayment of the renewal fees.
In accordance with the Patents Regulations (Office practices, procedures, documents and fees), the second term of renewal applies six years after filing the patent application. In the affidavit filed with the request to revive patent ‘015, there’s an indication showing that the patent owner instructed her representative not to pay the renewal fee and turned to a company that provides payments service of patent renewal fees.
According to the company’s records, on January 15, 2004 the patent owner refused to pay the required payment. The patent owner argued it has no documentation of the refusal and the payment request sent earlier, the patent owner mentioned it might be due to an upgrade made in its computers system.
In 2007, the patent owner ordered the company to pay the renewal fees and it did not receive a notice of non-renewal. In 2011 when the patent owner ordered to pay the fee again, a notice was issued stating that the patent has expired and cannot be renewed. This application was filed nearly eight years after the actual expiration date due to abandonment.
The IP judge held that while in general, in the past, in such type of applications the Patent Authority would take a lenient approach, a balanced approach is now required in view sections 63 and 64 of the Patents Law, which protect third parties who rely on the expiration of the patent.
However, the IP judge stated that it was not reasonable to expect the public to keep on following expired patent publications, especially those which expired long ago. Although the Patents Registrar may order that a specific renewal will not be retroactive and thereby reduce the impact that the public relied on the expiration of a particular patent, such a remedy is appropriate only in borderline and rare cases.
The IP Judge considered the time that passed since the expiration of the ‘015 patent due to abandonment together with the fact that the patent owner filed the request two and a half months after it learned of the expiration, and came to the conclusion that the application must be rejected.
Clearly, the Israeli Patent Office now requests greater diligence in filing applications to revive and would not easily allow revival of expired patents if the abandonment was neglected for a long time.